Bubbles, Zubbles patent trouble

Crayola fighting to invalidate smaller competitor's patent.

Robert Smith, 8, of Forks Township, blows colored bubbles from a new Binney… (Donna Fisher/The Morning…)

April 14, 2011|By Scott Kraus, OF THE MORNING CALL

Can you patent colored bubbles?

That question is pitting Crayola, which rolled out its new washable colored bubbles in February, against a small competitor that makes a product called Zubbles and applied for a patent for colored bubbles in 2005.

Crayola, based in Forks Township, has mounted a public relations campaign to reassure parents that its colored bubbles truly are washable after negative reviews from stain-addled customers proliferated on the Internet.

But it has been simultaneously fighting a behind-the-scenes battle to persuade the U.S. Patent and Trademark Office to throw out its competitors' colored bubble patent. A share of the profits of Crayola's new product may be at stake, experts say.

C2C Technologies, the Minnesota-based company that owns the Zubbles technology, was awarded a patent for colored bubbles on March 22. That day, Crayola filled a re-examination petition with the patent office arguing that the product shouldn't be patented.

"Uniformly colored bubbles are in the public domain, and have been there for many years," Crayola argued in its petition, which attempts to show the technology patented by C2C is neither new nor unique and shouldn't be protected.

C2C minority partner Marc Matsoff, whose Jamm Companies distributes Zubbles, said he'd be happy to talk with Crayola about collaborating on the technology.

"We are a small company, they're a big company," Matsoff said. "Do I think there is potentially some infringement, yes … if colored bubbles were so easy and we aren't doing anything new, why hasn't everyone come out with colored bubbles?"

Zubbles doesn't use the washable colored bubble technology covered by the patent because inventor Tim Kehoe determined it was too messy and wouldn't fly with consumers, Matsoff said.

Kehoe won Popular Science's Best of What's New 2005 Grand Award for General Innovation for a different product, vanishing colored bubbles, which are being marketed under the Zubbles name. C2C has a patent application pending for those bubbles.

"Tim tried to pitch that to toy companies and they didn't want anything to do with it," Matsoff said.

Crayola spokeswoman Stacy Gabrielle said the company doesn't comment on patent issues.

Patent law experts say companies typically file requests for re-examination when they fear a patent holder could threaten their business.

"Generally, either the patent holder has threatened suit, or has contacted the likely defendant about a likely infringement," said Peter Cronk, a Philadelphia lawyer who specializes in patent law. "It's less expensive than fighting the claim in court."

It also buys some time and would allow Crayola to go on the offensive, rather than wait to defend itself against any patent infringement lawsuit, said Jay Erstling, a professor at William Mitchell College of Law in St. Paul, Minn. Infringement lawsuits are put on hold until a patent re-examination is resolved.

Matsoff said he hasn't ruled out taking legal action against Crayola if the patent is upheld.

Patent re-examinations are rare, said R. Polk Wagner, a University of Pennsylvania Law School professor whose specialty is patent and intellectual property law.

"Very, very few patents are re-examined, less than 1 percent," Wagner said. "Re-examination may or may not result in the patent being eliminated entirely. Often the claims are altered slightly."

Millions of dollars could be at stake in the colored-bubbles challenge.

"If the patent survives, and Zubbles accuses Crayola of infringement, and Zubbles wins the lawsuit, then the possible remedies might range from nothing, to a portion of profits, to a royalty rate, to an injunction stopping Crayola from shipping its product," Wagner said.

Several experts said the maneuvering could be laying the groundwork for negotiations over the technology.

Matsoff said he hopes that a settlement can be reached that would allow the companies to cooperate on colored bubbles, and perhaps even allow Crayola to adopt Zubbles vanishing color technology.

"Ideally, we'd be able to pool our resources rather than pay a bunch of lawyers," he said.